In-house counsel take on patent reform
While there is not uniform agreement on all issues, we were able to find consensus in a number of areas, as well as identify ways to further focus efforts on the most important issues in the weeks and months ahead.
May 21, 2014 at 08:00 PM
4 minute read
At RPX, we are great believers in the power of collaborative action. Our network was formed as a united response to widespread patent risk, and an ethos of sharing resources informs nearly everything we do. For example, at RPX's fifth annual conference in early May, we held a group session at which more than 100 in-house IP attorneys and company executives shared insights and ideas on the current patent reform efforts in Washington.
The session started with useful context-setting remarks by Nathan K. Kelly, deputy general counsel for intellectual property and solicitor at the U.S. Patent and Trademark Office (USPTO). Kelly reminded the audience that any and all discussion of patent reform needs to be balanced and take into account the pitfalls that lurk behind the potential gains for the patent ecosystem.
Kelly gave two examples concerning recent Supreme Court cases. He pointed out that the recent Section 285 decisions in the Highmark and Octane rulings may actually end up undermining support for fee-shifting legislation in the Senate. Similarly, mandating a universal Section 112 standard in the pending ruling in Nautilus would weaken the current debate on indefiniteness.
After Kelly's overview of the current legislative and regulatory situation, attendees at the session broke into working groups to discuss three of the main goals of patent reform: strengthening patent quality, improving litigation procedures and enhancing transparency and notice.
The patent quality breakout group summarized its discussion, noting that the Supreme Court has already moved forward on key concerns in this area: claim construction review and software eligibility. Participants noted that briefing in Teva is still open, meaning that corporate counsel still have time to author or join an amicus brief regarding whether the Federal Circuit should be reviewing claim construction for clear error or de novo. Alice, on the other hand, while closed for briefing, will be open to comments on implementation in the USPTO when a decision comes down on the boundaries of Section 101.
The litigation procedure group focused on a number of measures that might provide immediate relief. There was a call for efforts to establish case law that apportionment was the appropriate starting place for a damages calculation. The group discussed that pre-Markman discovery stays, fee shifting for extra-core discovery and mandatory stays during post-grant review could effectively curb litigation costs that NPEs frequently use to leverage settlements.
Finally, the notice and transparency group reported near consensus that real-party-in-interest proposals should be adopted in order to create greater ownership transparency. However, the drafting of the provision would be the key to proper balance. The involvement of state attorneys general in the most egregious assertion letter fraud actions was acceptable to the group, but they were concerned that such involvement might go too far if it started to interfere with the federal judiciary's duty to handle patent cases. Heightened pleading standards in patent cases were seen as the most impactful reform currently being proposed. The participants agreed that greater openness about patent transactions—including the intent of an operating company to sell a patent to an NPE—could give operating companies a chance to reduce the possibility of later litigation, as well as build a market for patent sellers to non-NPE buyers.
Having over 100 in-house IP executives focusing on determining the appropriate path forward for patent reform at this critical juncture is a valuable thing. While as expected there is not uniform agreement on all issues, we were able to find consensus in a number of areas, as well as identify ways to further focus efforts on the most important issues in the weeks and months ahead.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllElaine Darr Brings Transformation and Value to DHL's Business
How Marsh McLennan's Small But Mighty Legal Innovation Team Builds Solutions That Bring Joy
Democratic State AGs Revel in Role as Last Line of Defense Against Trump Agenda
7 minute readTrending Stories
- 1Stock Trading App Robinhood Hit With Privacy Class Action 1 Month After Alleged Data Breach
- 2NY High Court Returns Fired Priest's Discrimination Claim to State Agency
- 3Digging Deep to Mitigate Risk in Lithium Mine Venture Wins GM Legal Department of the Year Award
- 4Reminder: Court Rules and Statutes Apply to Pendente Lite Custody Decisions
- 5Consumer Cleared to Proceed With Claims Against CVS 'Non-Drowsy' Medication, Judge Says
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250